Classes server makers fight Blackboard patent

The makers of the software behind Yale’s Classes*v2 server are taking legal steps to challenge a patent they say is too broad and may ultimately threaten Yale’s ability to use the server freely.

The Software Freedom Law Center, or SFLC, asked the U.S. Patent and Trademark Office to review a patent for e-learning software held by Blackboard, a for-profit corporation based out of Washington, D.C. The request, announced last week, was filed Nov. 17 on behalf of three groups, including the Sakai Foundation, whose open-source software powers the Classes*v2 server. Some in the open-source field said the patent challenge is necessary to prevent Blackboard from suing open-source software providers or users, such as the University, although Yale is not involved directly in this case. Also recently, a different company that had threatened to sue Yale over rights to use video streaming technology said this week that it will not take legal action.

The patent office will act on SFLC’s request by mid-February and will likely agree to examine Blackboard’s patent, SFLC attorney Richard Fontana GRD ’02 said. The request comes on the heels of a lawsuit Blackboard filed in July against Desire2Learn, another for-profit company, for infringing on a patent that covered Internet-based educational software that gives different privileges to teachers and students.

Though Blackboard has not filed any other lawsuits, Fontana said the open-source community was fearful that it would be the next target, prompting the recent lawsuit. Open-source programs enable administrators to customize freely the software’s features and settings, as Yale has done since adopting Classes*v2 last year.

“We asked [Blackboard] for a promise not to assert the patent,” Fontana said. “They made some statements that suggested that they were willing to divide and conquer the open-source community.”

A Blackboard spokeswoman did not return a request for comment, but that company has stated that it is confident in its patent claims and has no intention of suing open-source software providers.

Chief Information Officer Philip Long said Yale has no formal position on the Blackboard case. Yale uses both Sakai and Blackboard software, the former in Classes*v2 and the latter in the several graduate schools. The University licenses Sakai software directly from the Sakai Foundation and is a Sakai Partner. Partner institutions pay dues to the Foundation and help influence its priorities and work on software development.

Fontana said 90 percent of requests for patent reviews are typically accepted, and he expects a review would result in Blackboard’s patent claims being narrowed, if not eliminated entirely.

Though Blackboard has not sued anyone aside from Desire2Learn for patent infringement, Fontana said, Blackboard’s move has already had a chilling effect on the educational software industry.

“We’ve unfortunately seen that this effort to spread fear, uncertainty and doubt has had some effect,” he said.

He said universities and other users fear that Blackboard could sue them for using software such as Sakai, making them afraid to switch to non-Blackboard software or expand their use of it.

While the Blackboard case is only beginning to wind its way through the legal system, a different patent infringement case directly involving the Yale recently came to an end in the University’s favor. Last year, Acacia Research Corporation, a patent holding company, asked Yale to pay a $4,000 licensing fee for the use of video-streaming technology that the company said falls under a patent it owns. Administrators refused, saying the Acacia patent was overly broad and would not apply to Yale’s use.

Federal Markman proceedings, in which the terms of a patent are defined, took place in September. Acacia Chief Executive Officer Paul Ryan told the News at the time that a trial would probably begin next year if the University did not pay the licensing fee. Though Yale has continued to decline to pay the fee, Acacia will not continue with a lawsuit against Yale, Acacia spokesman Rob Stewart said this week.

“There is no lawsuit,” he said. “We’re not going to sue Yale for $4,000.”